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Hello, my name is Kumi Kimura, and I am here to help you become better informed about trademarks. Here with me to help with the explaining is Goichi Mine. Thank you for helping.
Thank you for having me.
Well, let's get started then. A trademark is a name or mark given in order to communicate to consumers that a good or product is made by a particular company.
Now, Mr. Mine, I hear there are various types of trademarks?
There are a number of types of trademarks, including just characters, just figures, or a combination of both. There are also trademarks formed from signs, and three-dimensional ones too.
The Trademark Act has also been revised, and protection is given to trademarks that previously were considered eligible to be trademarks, such as sounds and motions, but I will explain about that in greater detail in the "Overview of the protection for Non-Traditional Trademarks."
We can see a lot of trademarks all around us. We sent our reporters into the streets to research.
Out here on the streets, trademarks are everywhere!
It is no exaggeration to say that we live our lives surrounded by trademarks. We also asked about the function of trademarks.
I search by looking at the logo marks on labels, or at the names of goods.
I worry about where new goods are coming from.
I look at the logo mark, and if it is from a famous maker then I feel it should be okay.
I always go with goods from the same makers.
I look at the labels and packaging and buy the same things.
Well... I don't think I'd buy things from a maker I'd never seen before.
I mostly choose things that I know, such as the names of goods or the maker names that I've seen or heard.
I feel more comfortable that way.
So then, people look for goods using the logo marks the good’s names as a guide Mr. Mine, could you explain to us in a little more detail about trademarks?
As could be seen in the video, when consumers purchase goods or make use of services, they use "names" and "marks" as guides for their selection.
In other words, it is extremely common for them to use trademarks to make purchase choices.
This is where the major role of the trademark is.
It shows that if items have the same mark, then they come from the same producer or seller.
So you are saying we have been unconsciously using trademarks to identify who has made a particular good.
That's right. If items have the same mark then we understand that the goods are of the same quality, and can be safely purchased at any store.
This is also the power of trademarks.
Also, by building up trust in goods or services, the trademark gives birth to a brand image of "reliability" and "peace-of-mind purchasing."
So in other words, if you continue to provide a good product , then consumers will get to have a good impression of the good's trademark itself.
That's correct. Trademarks also play a substantial role in television commercials and magazine advertisements, and due to this role they are called "silent-sales-people."
However, if a trademark is imitated arbitrarily, and bad-quality goods comes out, then to consumers the trademark becomes unreliable offering no peace-of-mind, and the brand image drops.
What protects these names and marks attached to goods and services - in other words, trademarks - as an asset is the intellectual property known as the "trademark right."
Could you explain in a little more detail about trademark rights?
First, when using a trademark, if you use naming that is identical with or similar to another person's trademark for a goods that is the identical or similar, and if that trademark is registered, then that constitutes an infringement of the trademark right, and there is a possibility that you might be sued.
Conversely, if you register a trademark, then it is protected based on the trademark right, and if someone else's identical or similar trademark is used for the identical or similar goods, then you are able to demand injunction against the use or demand compensation for damages.
It's important to register a trademark in order to protect your goods.
You've explained about the importance of registering a trademark, but how do you actually go about doing that?
In order to register a trademark, you need to file an application to Japan Patent Office and undergo an examination.
First, you file an “Request for Trademark Application“, including the trademark you would like to have registered, the goods or services on which it will be used, and your name, etc. This can be submitted to the Japan Patent Office over the Internet using a PC, via post, or filed directly with the Japan Patent Office at the counter. When filing an application, you will need to pay a fee known as the application fee.
And next comes the examination by the Japan Patent Office?
Correct, When an application is received the Japan Patent Office first does a formality examination. After that, an examination takes place to see trademark applied for can be registered. When trademark registration is given, the trademark will be registered upon payment of the registration fee, and its right is given.
Conversely, if registration is refused, then a request for a trial against the decision can be made.
Can you submit an opinion on another person's application?
Yes. If another person registers a trademark and you have an objection to that, then you can file an opposition to registration or file a trial for invalidation with respect to that trademark.
There is one other important thing concerning trademark rights.
And what might that be?
One must consider the trademark and the goods or services as a set.When filing an application to the Japan Patent Office, the goods you intend to sell or the services you intend to provide that will carry the mark must be designated in advance.
The goods and services that have been designated are referred to as "designated goods" and "designated services" respectively.The scope of the right in trademark rights is determined by these "designated goods" and "designated services."
To give an example of "designated goods," using a drink maker, the brand's logo is the trademark, while the various goods offered are the "designated goods." Meanwhile, in the case of a hotel, the service of offering a "space to stay overnight in comfort" is the "designated service."
I see.
So when applying for a trademark, you need to include either "designated goods" or "designated services."Could you tell us about what can or can't be registered?
First of all, you can't register a trademark if your goods can't be distinguished from someone else's.
What kind of things do you mean?
For example, take a strawberry. You can't register words that indicate the common name or characteristics of the goods.
I see.
Is there anything else we need to be careful about when registering a trademark?
You can't register items that are similar to highly public marks such as national flags or the red cross mark as trademarks.
Furthermore, in cases where the identical or similar trademarks are used for the identical or similar goods, then the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark.
By the way, do trademarks have a period to their duration?
Trademarks last for 10 years from the day they are registered. However, they can be renewed repeatedly.
You also need to take care, as trademarks not in use may be rescinded of registration Also, the effect of trademark right is limited only in Japan.
What should someone do if they think they would like to register a trademark overseas?
There are two ways to file an application overseas.
The first method is to file a direct application to the authority with jurisdiction over trademarks in the country in which the application is sought.
With this method, you need to follow the procedures for each country in which you would like to file an application.
The other method is to file an application to the Japan Patent Office based on the Madrid protocol.
This method enables you to obtain rights in multiple countries by filing one application.
I see.
Now I imagine it must get rather detailed when actually applying for a trademark - either in Japan or overseas - so what kinds of documents do we need, and what should we write?
Japan Patent Office has the information you need on how to prepare filing documents, on its homepage, so please use that as a reference.
Consultations are also available at IP Comprehensive Support Counters in all prefectures, and general questions can be answered over the phone or in person at the National Center for Industrial Property Information and Training(INPIT). You can also ask professional patent attorneys, which can be found via the patent attorney search on the homepage of the Japan Patent Attorneys Association.
Finally, let’s summarize the benefits of registering a trademark and obtaining a trademark right.
To summarize the benefits of a trademark right:
If you have a trademark right, not only can you have exclusive right to use the trademark, you can prohibit other people from using the identical or a similar trademark on the same or similar goods.
Furthermore, a trademark right is valid all over Japan, and if someone infringes your trademark right, you are able to demand injunction against the use of your trademark and demand compensation for damages.
Well then, we've introduced some basic information about trademarks and how important they are. I hope you found it helpful. If any of you are considering registering a trademark, please avail yourselves of the options we’ve discussed today.
Thank you, Mr. Mine.
Welcome to the Trademark Channel, where we bring you the latest information concerning trademarks. Today we bring you information on the introduction of non-traditional trademarks.
In recent years, along with developments in digital technology, there has been an increase in the number of cases in which brand image is communicated via television or the Internet as part of a branding strategy breaking the language barrier.
However, the conventional system for trademarks only applies to things such as "characters, figures, or three-dimensional shapes" and things such as motion marks, colors and sounds could not receive protection as trademarks.
Meanwhile, taking a look globally, sounds and colors are protected as trademarks in countries such as America, England, Germany, France, Korea, and Australia. Protection for these non-traditional trademarks is becoming a global trend.
So a system of protection for these non-traditional trademarks has also been introduced in Japan.
Mr. Mine, what types of trademarks have been introduced?
There are 5 non-traditional trademarks that have been introduced: motions, holograms, colors, sounds, and positions.
One Japanese company has already registered a non-traditional trademark overseas.
This company has registered a sound as a trademark.
Let's take a look at non-traditional trademarks, using this company as an example.
You've probably heard this sound in commercials.
The sound, which is called a sound logo, has been registered as a trademark overseas by Hisamitsu Pharmaceutical.
Hisamitsu Pharmaceutical recognizes that the trademark is the brand and believes that trademarks have the role of symbols that market the image of a company and its goods as a brand.
A trademark is a symbol of brand value. People look at trademarks to see whether a brand is authentic or not when they decide to buy things, so in that sense the trademark is the brand, and it is an important piece of intellectual property in creating and maintaining that.
A trademark is an extremely important symbol in order for a brand to be understood and known.
Trademarks communicate brand value.
Hisamitsu Pharmaceutical believes that trademarks also have the role of a communication tool.
Accordingly, they believe that, due to the diversification of communication accompanying technological progress, protecting sounds and motions as trademarks is important.
I think that nowadays trademarks have the function of communicating, that is enabling communication between companies and their customers.
As you know, the Internet has become popular recently, and of course media such as television and radio are also on the rise.
So when you think about that, and about things like motions and sounds also functioning as trademarks, having a so-called communication function, I guess, well that is now possible.
Hisamitsu Pharmaceutical is expanding business operations globally.
Because of this, it was important to protect the sound logo by registering it as a trademark.
Well, sound marks are used in things like advertising, and advertising costs a lot of money, an enormous amount of money.
In order to preserve that use, if we can't turn that into a right using the trademark right system, then we can't safely use the trademark.
So in that sense I think the protection of non-traditional trademarks is necessary.
Advertising costs a large amount of money, and this is why Hisamitsu Pharmaceutical believes that it is important to obtain the rights for new trademarks such as sounds and motions and avoid having them imitated.
Furthermore, Hisamitsu Pharmaceutical believes that there is another large effect of this, other than just avoiding imitation.
You have to obtain a trademark in order to avoid being imitated.Well that is certainly on the one hand an important way of looking at it.
But when you think about the true nature of trademarks, then I think what is really important is the right to use.
By obtaining the exclusive right that is a trademark right, a company can safely provide goods and services.
If that right to use didn't exist, then they couldn't confidently develop their product lines.
So it is because of the right to use that goods can be safely provided, and large amounts of money can be spent on advertising. That's what I believe.
Through registration, a company can use its trademarks anywhere, and safely expand its business operations.
Hisamitsu Pharmaceutical believes that being able to turn these trademarks into rights, and proactively making use of these non-traditional trademarks will become increasingly important to companies.
It seems that the non-traditional trademarks are also seeing proactive use.
That's right.
As you could see in the video, there are currently many forms of trademarks that are appearing on the scene.
Proactively making use of the system that protects these non-traditional trademarks will probably be extremely important for businesses.
Well then, let's talk about the system for the non-traditional trademarks in a little more detail.
Joining us here in the studio is Mr. Sato of Japan Patent Office. Welcome Mr. Sato.
It's a pleasure to be here.
Getting straight to the point, with respect to the newly introduced system of protection for non-traditional trademarks, could you tell us about what kinds of things can be registered?
Yes. Under the pre-existing Trademark Act, the things that could be registered as trademarks were limited to characters, figures, and 3-dimensional shapes, or a combination of any of these, or a combination of these and colors, but as Mr. Mine mentioned earlier...In addition to these, one also will be able to register motions, holograms, colors, sounds, and positions as trademarks.
I see. So with the new system, five types can be registered as non-traditional trademarks.
Could you explain in a little more detail about each of them, starting with motions?
Of course. Things like moving characters or figures can be registered as a trademark called "Motion Mark."
I imagine you would see them a lot in TV commercials, and the target of protection is the changing of the characters or figures as time passes.
Next then - what are holograms?
A hologram is for example, somethings like this.
Things like figures, appearing to look different depending on the viewing angle can be registered as a trademark called "Hologram Mark."
Apparently, we can also register a color as a trademark; what do they mean by color?
Well, before, only characters or figures with color were able to be registered as trademarks. But, one also will be able to register colors per se.
Anexample would be something like colors used in wrapping paper or in advertisement signs.In addition to individual colors, combinations of colors are also a target of protection for the "Color Per Se Mark."
For example, in Australia,7-Eleven, Inc. has registered three horizontal stripes in the colors orange, green and red on a white or neutral background as a color per se mark.
And how about sound marks?
Yes, “sound” includes things like the sound logos used in commercials or the start-up sounds for PCs.
For example, the Windows start-up sound is registered as a trademark in places such as the U.S.
Now, it's hard to imagine what "position" might mean; what kinds of things does it indicate?
Well, a "Position Mark" is when something like a figure in a specific position on a product.
For example, even though the figure is simple, seeing that the figure is always placed in the same position, the consumers are able to recognize that the product is from a specific company.
Is there anything you have to pay attention to when actually applying for one of the five non-traditional trademarks you’ve just explained to us?
There is. When applying for a non-traditional trademark, on the request for a trademark application, in addition to the currently existing items, you need to include the following information.
First, you have to enter the type of trademark, such as “Sound Mark” or “Color Per Se Mark” so it can be understood what kind of non-traditional trademark you are applying for. You also need to state a "Description of Mark” in order to explain the non-traditional trademark. For “Sound Marks”, the Description of Mark is not required, but you need to write a musical score or write an explanation in the column for the trademark in which you are seeking registration, and attach an audio file. The scopes of the rights of the non-traditional trademarks will be determined taking all of these into account.
Is there any change to the fees for registering a non-traditional trademark?
No. The cost for registering a non-traditional trademark is the same as for registering conventional trademarks.
That was an explanation of the non-traditional trademarks. Finally, can you tell us what kinds of effects you can envisage from the introduction of the protection system for these trademarks?
Yes, as is the case with conventional types of trademarks, by registering a non-traditional trademark...You will gain the rights to demand injunction against infringement activities or demand compensation for damages. Also, by utilizing the Madrid Protocol, you will be able to apply for trademarks in many countries at once with a single application. This will make registering trademarks overseas much easier compared to before.
Registering non-traditional trademarks will also enable a safer expansion of brand strategy, won't it.
That's correct. The trademark system protects the intellectual property of companies, so please make use of it.
And that was our discussion of the non-traditional trademarks, with explanations from Mr. Sato of Japan Patent Office. Thank you.
Welcome to the Trademark Channel, where we bring you the latest information concerning trademarks. Today we introduce you to the Regional Collective Trademark System, which is supporting the promotion of regional brands.
Have you heard of the term "Regional Brand"? Currently, in various places all over Japan, movements are taking place to revitalize the economies of regional areas by increasing awareness of special goods as regional brands.
Many regional brands have names in which the region's names are combined with goods or services from those regions. There is a system that supports the promotion of regional brands by protecting them and their value at the early stages.
That system is called the Regional Collective Trademark System. There are various genres of regional brands, including things like agricultural products, fisheries products, livestock products, handicrafts, and hot springs, and many collectives have already registered regional collective trademarks.
You said trademarks. Does that mean regional brands can be registered as trademarks?
That's correct.
As is the case for normal trademarks, under the regional collective trademark system, if you register a trademark, you can seek injunctions against the use and claim compensation for damages in instances when the trademark has been used without permission or when a very similar brand name has been used.
I see. So it is a system that protects regional brands that are important to the regional people.
Yes. In addition to protecting regional brands, regional collective trademarks also create a variety of benefits, including regional revitalization.
There are many examples where trademark rights have been obtained as regional collective trademarks. Let's take a look at some of the people involved in initiatives that have registered regional collective trademarks in support of regional brands.
Regional Collective Trademarks Case Study
Kurokawa Onsen
Protecting a Precious Name
Kurokawa Onsen Tourism Hotel Association
Kurokawa Onsen is to the north of Mt. Aso in Kumamoto Prefecture, is known as a popular hot spring area, and is one of Japan's best. At KurokawaOnsen, the local hotels got together to create the image of the entire town as one inn.
This hot spring area is where I was born, and where we all live. It's a link to our ancestors. So it started with wanting something we could be proud of.
As the popularity of Kurokawa Onsen increased, so too did the number of places imitating its name or using it without permission. So the Kurokawa Onsen Tourism Hotel Association made an application and registered "Kurokawa Onsen" as a regional collective trademark.
It had a considerable effect. That's because, by registering a trademark, brand image is guaranteed. Now people actually respond when we say that they can't use the name without permission.
Kurokawa Onsen is always ranked highly in the Japanese hot spring rankings, because of its image as a comforting and rustic Japanese hometown, and the awareness of its brand has also changed due to the “regional collective trademark”.
I think the number one result it has borne is that people's enthusiasm has started to grow.
I think it has given birth to an awareness that Kurokawa Onsen won't be embarrassed with the service and hospitality it offers its customers.
The regional collective trademark system is a system that protects the Kurokawa Onsen brand that the region has carefully created is effective at improving the brand, and has a role in enabling the connection of regional assets with the next generation.
Regional Collective Trademarks Case Study
Toyooka Bag
Improving the brand and revitalizing the Association
Hyogo Prefecture LuggageIndustry Association
Toyooka City in Hyogo Prefecture. With a long history of bag-making, it has an 80% share of bag manufacturing in Japan. The Hyogo Prefecture Luggage Industry Association in Toyooka City is involved in the support of the regional brand "Toyooka Bag" in order to pioneer new markets.
In the midst of proactive action, the regional collective trademark system started on April 1 2006.
The association's activities were revitalized with the registration of Toyooka Bag as a regional collective trademark.
Our activities were hampered without something symbolic like that.
Actually, The association was becoming smaller every year, but since we got regional collective trademark, there have been a few new association members every year, saying they want to be involved with the Toyooka Bag brand, or saying they can't be involved yet but want to learn more.
A regional collective trademark has increased a brand's trustworthiness. Some association members make the step up from subcontractors to “individual makers” with making use of the Toyooka Bag brand.
When someone wants to take the step from being an OEM to selling products with their own brand, That's when using the Toyooka Bag brand makes it easier to make that move upwards. Naturally there are things like exhibitions...So you can have your company's goods and things you have developed on display with a small budget.That's difficult to do with a brand that a company has, but because it is a regional brand that the association has, you can recommend it with confidence, and I think that kind of thing is related to having a trademark.
In addition to improving the regional brand image, the association was revitalized and also increased its sales by making use of the regional collective trademark. The Hyogo Prefecture Luggage Industry Association is focused on the future and is continuing its initiatives for further Toyooka Bag expansion, including the opening of a training school for youth.
Regional Collective Trademarks Case Study
Higashikawa Rice Daisetsu-Asahidake Mineral Water
Revitalizing an Entire Region
Higashikawa town Agricultural Cooperative
Higashikawa is a town spread out at the foot of Mt.Taisetsu with a population of just under 8000 people. The town is known within Hokkaido for its rice, and the town's Higashikawa town Agricultural Cooperative has registered two regional collective trademarks, for Higashikawa Rice and Daisetsu-Asahidake Mineral Water.
The benefits we had from registering the trademark were people letting us know that they wanted to eat Higashikawa Rice and their asking where they could purchase it. Water is essential for rice, but in Higashikawa the whole town actually lives on underground water. With respect to the water, this is the only place in Hokkaido where people live their lives using underground water, which is extremely rare.
People from outside the town became interested and have moved here.I believe that the region itself has been revitalized.
Bonds within the region were always strong in Higashikawa town, but due to the regional collective trademark the sense of unity has increased further beyond the boundaries of the association, revitalizing the entire area.
The rice and the water has been registered as regional collective trademarks, and that has given us courage and strength, and with that a strengthened solidarity...There is evident build-up in the feeling of the townspeople, who are positively striving to sell the region’s appeal, and for that, I feel very thankful to the regional collective trademarks.
Higashikawa Rice has continued to constantly maintain and improve goods quality based on photo stickers of the farmer’s faces and unique strict standards. The regional collective trademark has added another layer of strength in their sense of responsibility towards the brand.
Now that it has been registered as a regional collective trademark ...I believe that this brand is about having to continue to make rice that consumers are going to continue to want.
Regional collective trademarks are not only for protecting regional brands; but to also make them more widespread. Furthermore, it has a role in revitalizing the town. With the appeal of Higashikawa town being communicated to the public, the number of people moving into the town and opening restaurants have increased.
So we have just seen three examples of registered regional collective trademarks.
That's right. All of the associations achieved a variety of benefit by registering regional collective trademarks.
The variety of benefits possible from making use of regional collective trademarks can also be understood from the results of surveys and interviews of people who have registered them.
Firstly there is an increase in sales of goods or services, or an increase in the sales price. Then there are ways to combat counterfeit goods, preserve and improve good quality, and improve the image and advertising. A further benefit is improved motivation within the associations.
There is a range of benefits that can be anticipated from a regional collective trademark, then. So how do you go about registering one?
Mine: Like with normal trademarks, you can register based on the same procedures, meaning application, examination, and finally, registration, but there are four major points involved with filing to register a regional collective trademark.
The first point is who the applicant is. Until now, the registrants could only be business cooperatives, but with the revisions to the Trademark Act in 2014, commerce and industry association, chambers of commerce and industry, and NPOs have become eligible to register since August 1 2014. Meanwhile, individuals, public companies, local authorities, corporations, and voluntary conventions can’t file.
Now the second point has to do with the brand-name recognized as the regional collective trademark.
Yes, There are three structures for trademarks recognized as regional collective trademarks.
The first is a combination of a region’s name and the common name of the goods or services.
The second is a combination of a region’s name and customarily used as a name indicating the goods or services.
The third is a combination of a region name’s and goods or services, with the addition of wording often used to indicate where the goods are produced or the services are provided.
And the third point for registering a regional collective trademark.
The third point is the name of the region used in the regional collective trademark.
The name of the region has to have a close relationship with the goods or services using the trademark.
When applying for a regional collective trademark, there needs to be a clear description between the region’s name and the goods or services, such as their being the place where the service is provided, or being the major production area or the place of origin for the production method used to make the product.
And the fourth point?
The fourth point is that it needs to be well- known.
In order to be registered as a regional collective trademark, the trademark needs to be well-known and actually in use for goods or services.
How do you prove that?
Well, when making your application...You have to provide documents like photographs or pamphlets that prove that the collective or collective members are using the trademark; or shipping tickets or newspaper articles that prove that the trademark is well-known.
In order to raise the value of regional brands, it is important to gain consumer trust by increasing the quality of the goods. This will also increase the popularity at the national level.
Japan Patent Office has a variety of information on regional collective trademarks and how to apply, on its homepage. So please refer to that.
So now you know about the regional collective trademark system. Regional collective trademarks are an effective system to support regional brands and protect and raise their value. So please make use of it.
Thank you Mr. Mine.